The Saul Zaentz Company v. Sprint

Filing 47

Memorandum in Opposition re 29 , 37 Partial Summary Judgment filed by The Saul Zaentz Company. (Halvonik, Paul)

PAUL N. HALVONIK
California State Bar 34637
2600 Tenth Street
Berkeley, CA 94710
[phone]
Attorney for Plaintiff
THE SAUL ZAENTZ COMPANY

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

THE SAUL ZAENTZ COMPANY,
a corporation,

)
)
)
Plaintiff
)
)
)
vs.
)
)
SPRINT, a corporation,
)
)
)
Defendant.
)
)
____________________________________)

///
//
/

No. C-02-1956-SC
PLAINTIFF’S OPPOSITION TO
DEFENDANT’S MOTION FOR
PARTIAL SUMMARY JUDGMENT

Date: February 7, 2003
Time: 10:00 a.m.
Courtroom 1, 450 Golden Gate Ave.,
San Francisco, CA

STATEMENT OF THE CASE
This case is, as defendant says, a suit for copyright infringement. Plaintiff produced
and copyrighted the motion picture “One Flew Over the Cuckoo’s Nest”. Defendant
promoted its products and services with a commercial advertisement that appropriated the
film and did so without any authorization from plaintiff.1 This motion is addressed not to the
availability of statutory damages in the within action (there availability is tacitly conceded by
defendant) but to the measure of statutory damages. Defendant claims “single infringer”
status; in fact, however, defendant is a joint tortfeasor with an undetermined number of
television stations, all of which exhibited defendant’s commercial.
Although it seems peculiar (if not downright irregular) to introduce settlement
discussions into this motion, defendant has made those discussions the foundation for its
motion, claiming that such “discussions have been stalled, in large part because of Plaintiff’s
insistence that should the case proceed to trial, Sprint would be exposed to tens of millions of
dollars in statutory damages.” Memorandum of Points and Authorities in support of
Defendant’s Motion for Partial Summary Judgment on the Issue of Statutory Damages
(hereafter “DM”) 2:6-7. But, as the accompanying Declaration of plaintiff’s counsel shows,
plaintiff has never suggested that statutory damages would reach the magnitude of “tens of
millions” or, indeed, expressed any view whatsoever on the amount of statutory damages.

1

That defendant engaged in infringement, and wilfully so, does not seem a matter that is open
to serious dispute. Pursuant to paragraph 10 of the Confidentiality Stipulation and Order,
defendant is submitting a sealed envelope containing two one-page documents that discovery
has yielded in this action. Exhibit A, it will be seen, refers expressly to plaintiff’s film, “One
Flew Over the Cuckoo’s Nest”. After Exhibit B, there are no more references to the movie in
the documents plaintiff has received.
-1-

There is no way for plaintiff to make such an estimate because plaintiff does not have a clue
as to the number of different stations which broadcast the commercial; defendant refuses to
produce that information, though one of defendant’s counsel promised it to plaintiff last
summer. Accordingly, in response to defendant’s invitation to quote a “reasonable amount”
to settle the case, plaintiff’s counsel said that it would be impossible to give such an informed
estimate without knowing the number of different stations that broadcast the infringing
commercial advertisement. Specifically, plaintiff’s attorney opined that, given the ruling of
the Ninth Circuit in Columbia Pictures Indus. Inc. v. Krypton Broadcasting of Birmingham,
Inc., 259 F.3d 1186, 1190, 1194 (9th Cir. 2001), it would border on malpractice to settle
without at least knowing the number of stations that broadcast the advertisement. It is
defendant’s attorney who introduced “tens of millions” into the discussion. That told plaintiff
that there must be numerous stations involved but, as things stand, plaintiff knows no more
than that. Plaintiff, indeed, has not as yet made a decision to seek statutory damages and, of
course, need not make such a decision at least until the jury has returned a verdict on liability.
Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 347 n.5 (1998).
I
PARTIAL SUMMARY JUDGMENT IS INAPPROPRIATE
WHERE THE ISSUE IS NOT THE AVAILABILITY OF DAMAGES
BUT THE MEASURE THEREOF;
IT IS PARTICULARLY INAPPROPRIATE IN A CASE
WHERE THE ISSUE MAY NEVER ARISE
Kendall McGaw Lab. v. Community Memorial Hosp., 125 F.R.D. 420, 421 (D.N.J.
1989) holds that partial summary judgment is not available to resolve issues concerning the

-2-

measure of damages as distinguished from issues concerning the availability of damages
because such a judgment goes only to a portion of a claim. The Court observed that:
“A Rule 56 movant may not ‘play leapfrog’ with his case by
seeking a decision whose validity depends on one or more
unresolved issues. To allow another result would ignore the
chronological structure of trial practice. Just as the events
which produce litigation move forward in time, so must the
litigation itself.”
Id. at 422; see also Antenor v. D & S Farms, 39 F.Supp.2d 1372, 1375 n.4 (S.D. Fla 1999)
and City of Witchita Kansas v. U.S. Gypsum Co., 828 F.Supp. 851, 869 (D. Kan. 1993) as well
as authorities therein collected.
It is true, as defendant points out (DM 5:23-24),that Siddiqui v. U.S., 217 F.Supp.2d
985 (D.Ariz. 2002) comes to a result inconsistent with the Kendall McGaw holding. But
whether partial summary judgment was appropriate does not appear to have been at issue.
Each side was seeking summary judgment on damages issues and neither side appears to have
suggested that partial summary judgment was open to question. The other case upon which
defendant relies (DM 7:7-11), Fournier v. Erickson, 202 F.Supp.2d 290 (S.D.N.Y. 2002) does
not clash with Kendall McGaw because Fournier is a holding, in a copyright case, that
statutory damages are not available at all, thus disposing of the entire claim, rather than a
portion thereof, and requiring no “leapfrog.”
II
DEFENDANT IS NOT A SINGLE INFRINGER
BUT A MULTIPLE JOINT-TORTFEASOR
Defendant’s case can be fairly capsulated as follows: Sprint is a single infringer and
the infringer of a single work is liable for a single statutory damages amount no matter the
-3-

number of infringements. Defendant expressly quotes the legislative history of 17 U.S.C.
§504, which certainly supports the conclusion that a single infringer is responsible only for a
single statutory damages amount no matter the number of infringements. See DM, 6:12-15;
H.R. Rep. No. 1476 at 162; 1976 U.S. Code: Congressional and Administrative News, 5659,
5778, Vol. V, 94th Cong. 2nd Session. But defendant has omitted that portion of the legislative
history providing that the single infringer rule applies only when the single infringer acted
“individually.” Thus,
“Where the infringements of one work were committed by a
single infringer acting individually, a single award of statutory
damages would be made.”
1976 U.S.C.C.A.N. at 5778. (Emphasis added)
The instant case, however, does not concern an infringer who acted “individually”.
Sprint did not act individually but jointly with an undetermined number of television stations.
For that reason, Sprint is jointly and severally liable with each of the different stations which
broadcast the infringing commercial. The very legislative history defendant quotes deals
expressly with the issue of a tortfeasor, like Sprint, who has acted other than “individually”.
“. . . where the work was infringed by two or more joint
tortfeasors, the bill would make them jointly and severally liable
for [the statutory amount].”
Id.
And, indeed, that is just what the statute provides:
“. . . the copyright owner may elect, at any time before final
judgment is rendered, to recover, instead of actual damages and
profits, an award of statutory damages for all infringements
involved in the action, with respect to any one work, for which

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any one infringer is liable individually, or for which any two or
more infringers are liable jointly and severally. . ..”
17 U.S.C. §504(c) (emphasis added).
Plaintiff is a joint tort feasor with each of the television stations which broadcast its
commercials.2 That is precisely what the Ninth Circuit held not once, but three times, in the
Krypton litigation. In Krypton, plaintiff brought suit for infringement against Elvin Feltner
Jr., his Krypton International Corporation, in which he was the sole stockholder, and three
televison stations which were wholly owned by the Krypton International Corporation.
“During the course of the litigation, Columbia dropped all causes of action except its
copyright claims against Feltner.” Columbia Pictures Television v. Krypton Broadcasting of
Birmingham, Inc., 106 F.3 284, 288 (9th Cir. 1997).3 The district court found that airings of
the same work by a different station constituted a separate act of infringement. Feltner v.
Columbia Pictures Television, Inc., 523 U.S. 340 (1998); Columbia Pictures v. Krypton
Board of Birmingham, supra, 259 F.3d at 1190.4 Feltner claimed that the district court’s

2

Plaintiff agrees with defendant that the number of broadcasts of its commercial advertisement
on any individual station is not a proper measure of the number of infringements. See DM
6:25-26. But the stations that broadcast the infringing commercial are, themselves, infringers
no matter the number of times it was broadcast and, according to the terms of the statute and
the legislative history, defendant is jointly and severally liable with each of those stations for
their infringing act, as long as the stations broadcast it at least once.
3

See also Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 343 n.1 (1998);
Columbia Pictures, Inc. v. Krypton Broadcasting of Birmingham, 259 F.3d 1186, 1190 (9th
Cir. 2001).
4

As defendant notes (DM, 7-8), the Court also held that each episode of a television series
constituted a separate “work” for purposes of calculating statutory damages. That holding is
not pertinent to the instant case.
-5-

ruling was error on the same ground defendant urges here, that he was a single infringer.
While Feltner was in a position to argue (as Sprint cannot), that all the infringing entities were
under his control and engaged in but one endeavor, the district court found otherwise. The
district court found that Feltner was not acting alone and thus not a single infringer; to the
contrary, each of the three stations independently infringed on plaintiff’s copyright and were
not, as to each other, joint tortfeasors. In other words, each station was a separate joint tort
feasor with Feltner; no station was a joint tort feasor with another station. Columbia Pictures
Television v. Krypton Board of Birmingham, Inc., supra, 106 F.3d at 294 including n.7.
Accordingly, Feltner was deemed a joint and several infringer with each of the three television
stations and there were, therefore, three separate statutory awards for infringement for each of
the three different stations. Id., reversed on other grounds, Feltner v. Columbia Pictures
Television, Inc., supra, 523 U.S. at 552-555. The Supreme Court reversed the Ninth Circuit’s
holding (106 F.3d at 293) that Feltner was not entitled to jury trial on the statutory damages
issue. But Feltner’s Supreme Court victory may be described, without exaggeration, as
Pyrrhic. The district court statutory damages award from which Feltner appealed was in the
sum of $8,800,000.00. 106 F.3d at 288. The Ninth Circuit ruled that Feltner’s success on the
jury trial issue in the United States Supreme Court did not make him a prevailing party for
purposes of an award of attorneys’ fees, Columbia Pictures v. Krypton Broadcasting of
Birmingham, 152 F.3d 1171 (9th Cir. 1998)5, and, on remand, the jury awarded statutory

5

The Ninth Circuit in 1998 also noted that it had previously affirmed the district court’s award
of statutory damages and that the Supreme Court’s opinion had in no way altered Columbia’s
entitlement to statutory damages. 152 F.3d 1171-1172. In its 2001 decision, the Ninth
Circuit, describing “[m]ore specifically” its 1997 ruling, emphasized that it had rejected
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damages in an amount almost four times the original award: $31.68 million dollars. 259 F.3d
at 1189.
Feltner, again, appealed the award of statutory damages. Once again Feltner claimed
that he qualified as a single infringer and that it was error to deem the airing of the same work
on different stations as separate acts of infringement. Again, the Ninth Circuit rejected
Feltner’s claim and affirmed the district court.
Feltner, as already noted, had at least a plausible argument that, because of his
ownership of all the stations, he was a “single infringer” and this status also provided the
plausible argument that, at the very least, all of the stations were “joint tortfeasors” so that
there was only one instance of joint infringement. Again, the Ninth Circuit squarely ruled the
other way:
“Feltner next argues that the district court erred by allowing two
awards of statutory damages for one ‘work’ under Copyright
Act §§504(c)(1). Specifically, Feltner asserts that he is entitled
to introduce evidence that the two defendant stations that aired
‘Who’s the Boss?’ are joint tortfeasors, and that therefore, each
station’s airing of the same episode should only count as one
‘work.’ This argument is not persuasive for two reasons. First,
there is no evidence in the record to suggest that the stations are
joint tortfeasors. Second, to the extent that Feltner seeks to
introduce evidence to demonstrate his connection with each of
the stations, that simply makes Feltner a joint tortfeasor with
each station – it does not make each station a joint tortfeasor
with respect to the other. Columbia Pictures, 106 F.3d at 294.
This district court’s decision on this issue is therefore
affirmed.” 259 F.3d at 1194.

Feltner’s contention that the district court “erred in concluding that each airing of the same
episode by the same station controlled by Feltner constituted a separate act of infringement . .
..” 259 F.3d at 1190 n.3.
-7-

Defendant’s instant motion is, therefore, premised on a theory of liability which cannot
conceivably be reconciled with the Krypton holdings of the Ninth Circuit. Defendant is
indubitably a joint tortfeasor with each television station which broadcast the infringing
commercial and, as we understand it, there is no contention by defendant that these stations
were acting together and thus joint tortfeasors as to each other.6
Defendant, in its Memorandum in support of its Motion, at no point acknowledges the
Ninth Circuit’s painstaking Krypton analyses of the joint tortfeasor rule as it applies to an
infringer who broadcasts on different television stations. Except for the attempt by plaintiff to
fashion a copyright infringement rule immunizing a direct infringer from its contributory
infringements, there is no discussion of joint tortfeasors at all. We turn to defendant’s
suppositious rule immunizing direct infringers from liability.
III
THERE IS NO RULE IMMUNIZING
A DIRECT INFRINGER FROM LIABILITY FOR
CONTRIBUTORY INFRINGEMENTS
Defendant insists there is a rule that no direct infringer can, at the same time, be a
contributory infringer. In support of that proposition, defendant cites Self v. Fisher Controls

6

There is no tension between the Krypton cases and Fournier v. Erickson, 202 F.Supp.2d 290
(S.D.N.Y. 2002) upon which defendant’s rely. Fournier is a case in which statutory damages
were held unavailable because the infringement occurred before the copyrighted work was
registered. See 17 U.S.C. §412 (1). The court’s opinion pre-supposes that there was more
than one infringement (see 202 F.Supp.2d at 298) but that the campaign having “commenced”
before there was registration, the different discrete infringements were not within the ambit of
17 U.S.C. §504 (c).
-8-

Co. Inc., 566 F.2d 62, 64 (9th Cir. 1977) as holding that “Contributory infringement actions are
limited to situations where defendant itself has not directly infringed . . ..” DM, 8:24-28.
First of all, neither Self nor the other authority upon which defendant relies, Suresafe
Indus., Inc. v. C & R Pier Mfg., 850 F.Supp. 869 (S.D.Cal. 1993), is a copyright case. Both
are patent cases. Secondly, there is no rule that a direct patent infringer cannot, at the same
time, also be a contributory patent infringer. Taking the second point first:
Cases abound in which a direct patent infringer has also been found a contributory
infringer. See, for example, Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 15671568 (Fed. Cir. 1983); Procter & Gamble, Co., v. Nabisco Brands, Inc., 604 F.Supp. 1485,
1490 (D. Del. 1985).

The narrow rule, which defendant has mistakenly expanded to conflict

with Fromson, has to do with a definitional point of patent law which seems to arise only in
cases concerning venue. 35 U.S.C. §271(c), which defines a contributory patent infringer, is,
by its terms, incompatible with a direct infringement. Some have described this as the
“component” rule. See, e.g., U.S. Fidelity & Guar. v. Star Technologies, 935 F.Supp. 1110,
1115 n.3 (D.Or. 1996). In inducement cases (see 35 U.S.C. §271(b)) it is sometimes
described as the “same item” rule. The issue arises in the context of venue, where a plaintiff,
for purposes of venue, pleads that the “same item” is both a direct infringement and a
contributory infringement or inducement. Procter & Gamble, Co., v. Nabisco Brands, Inc.,
supra, 604 F.Supp. at 1490 (D. Del. 1985); see also Picker Intern. Inc. v. Varian Assoc. Inc.,
661 F.Supp. 347, 350 (N.D. Ohio 1987) as well as the cases cited by defendant.
When properly pleaded, as to a single device, a claim of contributory infringement
necessarily excludes a direct infringement. As Rosenberg explains it,
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“By its terms, 35 U.S.C. §271(c) only applies to sales, offers to sell and
importation into the United States.
A plaintiff claiming contributory infringement must allege and
ultimately prove four elements:
(1)
The defendant sold a component or a material for use in
practicing the patented invention;
(2)
The component or material constitutes a material part of the
invention;
(3)
The defendant knew that the item it sold was especially made or
adapted for use in infringing the patented invention; and
(4)
The item sold is not a staple article or commodity of commerce
suitable for substantial noninfringing use.
Only the seller of such component is liable as a contributory infringer.
The buyer becomes liable as a direct infringer when he uses the overall
patented combination. And, additionally, direct infringement must be alleged
and proven.” (Footnotes omitted)
3 Rosenberg, Patent Law Fundamentals, §17.02[2][b] 17-41 (2nd ed, Rev. 2001). 35 U.S.C.
§271(c) does not include “the overall patented combination” except as to the buyer and thus,
as to the very same item, one cannot be both a direct and contributory patent infringer. But
where one both directly infringes, by producing an item itself, and infringes contributorily, by
providing components of the same device to others, it is both a direct and contributory
infringer. Fromson v. Advance Offset Plate, Inc., supra, 720 F.2d 1567-1568 (Fed. Cir.
1983); Procter & Gamble, Co., v. Nabisco Brands, Inc., supra, 604 F.Supp. at 1490 (D. Del.
1985).
There is, moreover, no parallel in copyright law to the statutory component rule of
contributory infringement in patent law. This Court’s opinion in FMC Corp. v. Up-Right,
Inc., 816 F.Supp. 1455 (N.D.Cal. 1993), aff’d, 21 F.3d 1073 (Fed. Cir. 1994), for example,

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holding that replacing parts for the heads on a grape harvester were “repairs” and not an
infringing “reconstruction”, could not have any conceivable application to a copyright case.7
The copyright “contributory infringer” doctrine has nothing to do with the statutory
contributory infringer doctrine of copyright law. The former is a judicial construct and serves
simply as an analytic tool to identify infringement in its various forms. Casella v. Morris, 820
F.2d 362, 365 (11th Cir. 1987), a case of both direct and contributory infringement, contains
the following extremely pertinent quotation from Sony Corp. v. Universal Studios, Inc., 464
U.S. 417, 435 (1984):
[V]icarious liability is imposed in virtually all areas of the law,
and the concept of contributory infringement is merely a species
of the broader problem of identifying the circumstances in
which it is just to hold one individual accountable for the
actions of another . . .. [T]he lines between direct infringement,
contributory infringement and vicarious liability are not clearly
drawn . . .. The lack of clarity in this area may, in part, be

7

Which is not to say, FMC Corp. does not have significant observations applicable generally to
tort law. On the contrary, it’s statement about joint tortfeasors is certainly applicable here:
“Under federal patent law, when infringement results from the
participation and combined or successive action of several
parties, those parties are joint infringers, and are jointly liable.
See, e.g., Shields v. Halliburton Co., 493 F.Supp. 1376, 1389
(1980) (‘Infringement of a patented process or method cannot
be avoided by having another perform one step of the process or
method.’). The result is the same where one or more of the
accused infringers is a contributory infringer:
“A contributory infringer, like any joint tortfeasor, is
responsible for the full extent of the harm suffered by the
plaintiff. Like any tortfeasor, defendants are liable not only for
the portion of the harm they caused, but also the portion of the
harm caused by the direct infringer. {Citation}.”
FMC Corp. v. Up-Right, Inc., supra, 816 F.Supp. at 1461.
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attributed to the fact that an infringer is not merely one who
uses a work without authorization by the copyright owner, but
also one who authorizes the use of a copyrighted work without
actual authority from the copyright owner.

Casella v. Morris, 820 F.2d 362, 365 (11th 1987) quoting from Sony Corp. v. Universal
Studios, Inc., 464 U.S. 47, 435 n.17 (1984); see also Encyclopedia Brittanica Educational
Corp. v. Crooks, 558 F.Supp. 1247, 1256 (W.D.N.Y. 1983).
That is this case in a nutshell. When defendant copied plaintiff’s work, it invaded both
plaintiff’s right to reproduce and plaintiff’s right to prepare derivative works. But that did not
produce two infringements. It produced, so to speak, the “same item”, the commercial
advertisement. But when defendant arrogated to itself plaintiff’s power to authorize others to
use plaintiff’s work, it engaged in a new and separate act of infringement. Those whom
defendant “authorized” to infringe plaintiff’s work themselves became infringers when they
did so. And their infringement was a fresh one committed jointly with defendant. This is so
whether one interprets the statutory “authorize” language (17 U.S.C. §106) as prohibiting a
direct infringement or a contributory infringement. Unlike patent law, there is no bright line
between the two. What we have here is what Justice Holmes, in the “Ben Hur” adaptation
case, described as a general tort rule concerning the liability of aiders and abettors. Kalem
Co. v. Harper Brothers, 222 U.S. 55 (1911). Whatever it is called, one who directly infringes
a copyright engages in a new infringement whenever he authorizes another to join him in
infringing and that other then infringes.
//
/
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IV
WHETHER PLAINTIFF CAN PROVE
THAT DEFENDANT IS A JOINT TORTFEASOR
Defendant complains about the manner in which plaintiff has pleaded defendant’s
multiple infringements of plaintiff’s copyright. Defendant says there should be allegations of
vicarious or contributory infringement and that, further, plaintiff cannot prove that defendant
participated in the infringements which occurred when the different stations broadcast
defendant’s commercial. DM, 8:5-21. Defendant’s pleading criticisms, in sum, are that
plaintiff has not pleaded legal conclusions. Had plaintiff pleaded legal conclusions, doubtless
defendant would have complained about that, and with a good deal more justification.
Defendant makes no claim that plaintiff has not pleaded the pertinent ultimate facts; that
should end the matter. The federal rules provide for “notice pleading,” Leatherman v. Tarrant
Cy. Narcotics Unit, 507 U.S. 163, 168 (1993), and defendant does not claim that it has not
received notice that plaintiff deems broadcasts on different stations as separate infringements.
Indeed, as the accompanying Declaration of Paul N. Halvonik, paragraph 4 shows, defendant,
in addition to the allegations of the complaint concerning multiple broadcasts over an
unknown number of stations, were specifically informed that plaintiff deemed broadcasts on
separate stations as separate acts of infringement over a week before defendant filed its
answer to the complaint. If defendant was under any doubt that the allegations of the
complaint gave notice consistent with the theory that broadcasts on separate stations were
separate acts of infringement, then defendant should have moved for a more definite statement
pursuant to Rule 12(e) of the Federal Rules of Civil Procedure. But defendant did not do so

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and has never had such a doubt. As previously noted, the “lines between direct infringement,
contributory infringement and vicarious liability are not clearly drawn . . .” Sony Corp. v.
Universal Studios, supra, 464 U.S. at 435 n.17. Surely a plaintiff is not required, in its
complaint, to draw those kinds of distinctions, especially when a defendant does not claim to
be misled. Defendant has found no authority for such a proposition and it is difficult to
imagine such an authority being unearthed.
Defendant’s claim that plaintiff cannot prove that defendant is a joint tortfeasor with
the television stations which broadcast its advertisement is a different kettle of fish. First of
all, that is a factual issue. Defendant brings this motion for partial summary judgment and it
is defendant’s burden to show “that there is no genuine issue as to any material fact . . ..”
Rule 56(c). Defendant does not purport to show that these advertisements appeared on
broadcast television through some happenstance independent of defendant. On the contrary,
paragraph 5 of the Declaration of Donna D. Osborn seems, if anything, to admit Sprint’s
complicity. There being no affidavit from defendant challenging the complicity of Sprint in
the broadcasting of Sprint’s commercial, there would seem no need for defendant to file an
affidavit disputing a claim in a Memorandum unsupported by any statement under penalty of
perjury. But if plaintiff is incorrect in this assessment, then it should be said that defendant
has obstructed all attempts by plaintiff to discover the identities of the television stations
which broadcast Sprint’s commercial. See DM, 4-5. Accordingly, from an abundance of
caution, plaintiff is submitting, with this Opposition, a Motion pursuant to Rule 56(f) asking
that hearing on defendant’s Motion be postponed until plaintiff has had an opportunity to

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conclude its discovery concerning the identity of the television stations and the circumstances
under which they broadcast Sprint’s commercial.8
Additionally, defendant’s arguments about plaintiff’s incapacity to prove Sprint’s
complicity in the broadcast of Sprint’s own television commercial would appear to be an
argument that goes to liability, not damages and, consequently, is a good reason why
defendant’s motion should be deemed an inappropriate “leap frog” motion for partial
summary judgment as described in §I, supra.
CONCLUSION
Defendant’s Motion for Partial Summary Judgment in this copyright case is, itself,
quite a creative endeavor. It is justified on the grounds that settlement discussions have
“stalled.” This case could go away, says defendant, but for plaintiff’s extravagant assessment
of the value of the case combined with a greed that surpasseth understanding. That is not a
good reason for partial summary judgment and it is also a total misconception and

8

The number of stations on which the commercial appeared would be relevant to the question
of statutory damages even if defendant’s theory that only one infringement occurred were
tenable. There is no dispute that plaintiff, at the very least, is entitled to elect statutory
damages for at least one infringement. The number of stations on which the infringing
commercial appeared would clearly be information to which the court would be entitled in
deciding how much statutory damages should be awarded. 17 U.S.C. §504(c) sets minimum
and maximum amounts and, within those ranges, the court has near unfettered discretion to
decide the amount to be awarded (see, e.g., Playboy Enterprises, Inc., v. Webbworld, Inc., 991
F.Supp. 543 (N.D. Tex. 1997 aff’d 168 F3d 486) and is entitled to any evidence pertinent to
whether the award should tilt toward the smaller or larger figure. See, e.g., Columbia Pictures
Industries, Inc. v. T & F Enterprises, Inc., 68 F.Supp.2d 833 (E.D. Mich 1999). Indeed,
defendant’s adamantine refusal to furnish this information is, itself, a factor the court will be
entitled to consider when imposing statutory damages. Segrets, Inc. v. Gillman Knitwear Co.,
Inc., 42 F.Supp.2d 58, 70 n. 25 (D.Mass. 1998); Video Café, Inc. v. De Tall, 961 F.Supp.23,
26 (D.P.R. 1997).
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misrepresentation of plaintiff’s position. Plaintiff has yet to set a value on this case. See
Halvonik Declaration, paragraphs 5 and 6. But plaintiff does want to know the number of
stations upon which the infringing commercial ran, information plaintiff would be entitled to
even if defendant’s claim to be a single infringer, rather than a joint tortfeasor, had some
foundation. See footnote 8, supra.
Although defendant has labeled its motion as one concerning the availability of
statutory damages, that is not a correct characterization of what it seeks. Rather than dispute
plaintiff’s entitlement to statutory damages, plaintiff seeks a determination concerning a
measure of statutory damages. Partial summary judgment should not be available for such a
“leapfrog”. Furthermore, defendant’s claim to be a “single infringer” is also
mischaracterization. Defendant is a joint tortfeasor with every televison station which it
authorized to use its infringing product. There is nothing ambiguous about the Ninth Circuit’s
Krypton rulings on that point.
Finally, to the extent defendant asserts that plaintiff is unable to prove that defendant is
responsible for the running of defendant’s own commercial on an unknown number of
television stations, then it must be said that the fault lies with defendant, who has obstructed
and continues to obstruct all discovery on the matter.
For the reasons mentioned, plaintiff respectfully urges that defendant’s Motion for
Partial Summary Judgment be denied.
Dated: February 14, 2003.

Respectfully submitted,
__________________
PAUL N. HALVONIK
Attorney for Plaintiff
THE SAUL ZAENTZ COMPANY

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TABLE OF CONTENTS

STATEMENT OF THE CASE

1

ARGUMENT

I

II

III

IV

PARTIAL SUMMARY JUDGMENT IS INAPPROPRIATE
WHERE THE ISSUE IS NOT THE AVAILABILITY
OF DAMAGES BUT THE MEASURE THEREOF;
IT IS PARTICULARLY INAPPROPRIATE IN A CASE
WHERE THE ISSUE MAY NEVER ARISE

2

DEFENDANT IS NOT A SINGLE INFRINGER
BUT A MULTIPLE JOINT TORTFEASOR

3

THERE IS NO RULE IMMUNIZING A DIRECT
INFRINGER FROM LIABILITY FOR
CONTRIBUTORY INFRINGEMENTS

8

WHETHER PLAINTIFF CAN PROVE
THAT DEFENDANT IS A JOINT TORTFEASOR

13

CONCLUSION

15

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TABLE OF AUTHORITIES

Antenor v. D & S Farms,
39 F.Supp.2d 1372, 1375 n.4 (S.D. Fla 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . ..3
Casella v. Morris,
820 F.2d 362, 365 (11th Cir. 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
City of Witchita Kansas v. U.S. Gypsum Co.,
828 F.Supp. 851, 869 (D. Kan. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Columbia Pictures Television v. Krypton Broadcasting
of Birmingham, Inc., 106 F.3 284, 288 (9th Cir. 1997) . . . . . . . . . . . . . . . . . . . . . . 5
Columbia Pictures v. Krypton Broadcasting
of Birmingham, 152 F.3d 1171 (9th Cir. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Columbia Pictures Indus. Inc. v. Krypton Broadcasting
of Birmingham, Inc., 259 F.3d 1186, 1190, 1194 (9th Cir. 2001) . . . . . . . . . . . . passim
Columbia Pictures Industries, Inc. v. T & F Enterprises, Inc.,
68 F.Supp.2d 833 (E.D. Mich 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Encyclopedia Brittanica Educational Corp. v. Crooks,
558 F.Supp. 1247, 1256 (W.D.N.Y. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12
Feltner v. Columbia Pictures Television, Inc.,
523 U.S. 340, 347 n.5 (1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
FMC Corp. v. Up-Right, Inc.,
816 F.Supp. 1455 (N.D.Cal. 1993), aff’d, 21 F.3d 1073 (Fed. Cir. 1994), . . . . . . . 10
Fournier v. Erickson,
202 F.Supp.2d 290 (S.D.N.Y. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Fromson v. Advance Offset Plate, Inc.,
720 F.2d 1565, 1567-1568 (Fed. Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
Kalem Co. v. Harper Brothers,
222 U.S. 55 (1911) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12
Kendall McGaw Lab. v. Community Memorial Hosp.,
125 F.R.D. 420, 421 (D.N.J. 1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

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Leatherman v. Tarrant Cy. Narcotics Unit,
507 U.S. 163, 168 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
Playboy Enterprises, Inc., v. Webbworld, Inc.,
991 F.Supp. 543 (N.D. Tex. 1997 aff’d 168 F3d 486) . . . . . . . . . . . . . . . . . . . . . . 15
Picker Intern. Inc. v. Varian Assoc. Inc.,
661 F.Supp. 347, 350 (N.D. Ohio 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
Procter & Gamble, Co., v. Nabisco Brands, Inc.,
604 F.Supp. 1485, 1490 (D. Del. 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
Self v. Fisher Controls Co. Inc.,
566 F.2d 62, 64 (9th Cir. 1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Segrets, Inc. v. Gillman Knitwear Co., Inc.,
42 F.Supp.2d 58, 70 n. 25 (D.Mass. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
Siddiqui v. U.S.,
217 F.Supp.2d 985 (D.Ariz. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Sony Corp. v. Universal Studios, Inc.,
464 U.S. 417, 435 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Suresafe Indus., Inc. v. C & R Pier Mfg.,
850 F.Supp. 869 (S.D.Cal. 1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
U.S. Fidelity & Guar. v. Star Technologies,
935 F.Supp. 1110, 1115 n.3 (D.Or. 1996). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9
Video Café, Inc. v. De Tall,
961 F.Supp.23, 26 (D.P.R. 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
STATUTES
Rule 12(e) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
Rule 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
17 U.S.C. §106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
17 U.S.C. §504 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
35 U.S.C. §271(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

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TREATISES
3 Rosenberg, Patent Law Fundamentals, §17.02[2][b]
17-41 (2nd ed. Rev. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10

OTHER
1976 U.S. Code: Congressional and Administrative News,
5659, 5778, Vol. V, 94th Cong. 2nd Session . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
H.R. Rep. No. 1476 at 162 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4
1976 U.S.C.C.A.N. at 5778 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4

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